Fw: Watermill International (Australia) Pty Ltd v David M Windmiller

[2010] ATMO 30

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Oppositions by WATERMILL INTERNATIONAL (AUSTRALIA) PTY LTD to applications under section 92 of the Act by DAVID M WINDMILLER to remove trade mark numbers 817820 and 968134 (11; 11 and 32) - WATERMILL; WATERMILL PURE REFRESHMENT (& Device) - in the name of WATERMILL INTERNATIONAL (AUSTRALIA) PTY LTD

Delegate:

Heath Wilson

Representation:

Opponent: Written submissions only.

Applicant: Phoebe Arcus of Counsel instructed by Spruson and Ferguson, Patent and Trade Mark Attorneys.

Decision:

2010 ATMO 30

817820: Non-use application under s92(4)(a) and s92(4)(b) -whether trade mark use by the opponent – whether single invoice is sufficient – use in the relevant period – non-use application unsuccessful.

968134: s92(4)(a) – No clear statement of intention to use at time of filing– Use established for class 11 and no intention to use on goods in class 32 – Non-use application partially successful – No award of costs.

Background

1. On 3 April 2008, David M Windmiller (“the removal applicant”) filed applications for removal from the register for non-use in relation to the following trade mark registrations owned by Watermill International (Australia) Pty Ltd (“the removal opponent”):

TM No.	Trade Mark	Filing Date	Class / Statement of Goods
817820	Watermill	20.12.99	Class: 11 Bottled water coolers and drinking water dispensers having electrically-actuated heating, refrigeration, and/or carbonation apparatus; drinking fountains and pressurised water coolers; reverse osmosis systems being systems for the purification of water; filtration systems; water dispensers; water filters; water sterilisation systems using ultraviolet light; water sterilisation systems using ozone; and parts and accessories for all the aforesaid goods all included within class 11
968134	1.09.03	Class: 11 Bottled water coolers and drinking water dispensers having electrically-actuated heating, refrigeration, and/or carbonation apparatus; drinking fountains and pressurised water coolers; reverse osmosis systems being systems for the purification of water; filtration systems; water dispensers; water filters; water sterilisation systems and using ultraviolet light; water sterilisation systems using ozone; and parts and accessories for all the aforesaid goods all included in class 11; water distribution installations; water filtering apparatus; water heaters and coolers; water purification installations; water purifying apparatus and machines; water softening apparatus and installations; water sterilisers; water supply installations; water installations - automatic; water coolers Class: 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

1. The above applications for non-use were under subsections 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (“the Act”) for registration no. 817820 and subsection 92(4)(a) only for registration no. 968134. In both cases, the applications were to remove all the goods in those registrations.

2. I heard this matter as a Delegate of the Registrar of Trade Marks in Sydney on 19 March 2010 where the removal applicant was represented by Ms Phoebe Arcus of counsel instructed by Spruson and Ferguson, Patent and Trade Mark attorneys. The removal opponent, who had been self-represented throughout the opposition process, did not appear at the hearing.

Evidence

• Non-Use Application filed 3 April 2008.

• Notice of Opposition filed 6 May 2008.

Evidence in Support

• Statutory Declaration of Michael Kar (Managing Director of the removal opponent) dated 29 August 2008, with Exhibits 1 to 34.

Evidence in Answer

• Statutory Declaration of Michael Rumore (Managing Director of Rumore & Associates, Private Enquiry and Commercial agents) dated 30 June 2009, with Exhibits MR-1 to MR-5.

Evidence in Reply

• Statutory Declaration of Michael Kar dated 25 September 2009.

The Law

1. The relevant provisions of section 92 of the Act provide:

92Application for removal of trade mark from Register etc.

(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

(a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)to use the trade mark in Australia; or

(ii)to authorise the use of the trade mark in Australia; or

(iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

(iv)has not used the trade mark in Australia; or

(v)has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)used the trade mark in Australia; or

(ii)used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note 1:For file and month see section 6.

Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

Reasons

1. Under section 100 of the Act, the onus of establishing use or the intention to use the “Watermill” trade marks lies with the removal opponent. To discharge the onus for s94(4)(b), the opponent must provide evidence of a bona fide use of trade mark no. 817820 occurring in the 3 year period ending one month before the day on which the non-use application was filed. In this case that period ends on 2 March 2008 (“the non-use period”). To rebut the allegation of a lack of intention to use trade mark no. 968134 (under s92(4)(a)), the opponent must either establish actual use at any time one month before the filing of the non-use application, or a bona fide intention to use the trade mark in Australia at the time of filing the trade mark application (1 September 2003). To this end, the removal opponent has primarily submitted evidence in the form of the statutory declaration of Michael Kar, Managing Director of Watermill International (Australia) Pty Ltd.  

Actual Use of “Watermill” trade marks

1. If the removal opponent can establish a single bona fide use (or authorised use) of the trade marks on the abovementioned goods, both of the removal applications would fail to the extent of that established trade mark use.[1] Ms Arcus made the submission that for a number of different reasons, the removal opponent’s evidence failed to establish any bona fide use of the trade mark by the owner in the non-use period. The removal opponent’s evidence consists of brochures, a competition advertised in a magazine, office stationery, a number of tax invoices, e-mails between Mr. Kar and consumers of the products, and evidence of trade mark use from 2005 in Indonesia.

   [1] See “Nodoz” Trade Mark [1962] RPC 1 at 7 (Ch D); Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261.

2. The opponent’s product brochures (exhibits 5 and 6), while indicating the use of the trade marks, are undated and a bald statement that they have been used since 2004 is not sufficient to establish use in the non-use period. The competition to win one of the opponent’s Watermill Water Coolers in January 2005 was advertised in Essential Magazine (Police and Nurses Credit Society in Western Australia). The removal applicant submitted that this advertisement did not indicate the goods were available for sale in Australia and if it did, that use would be localised. However, I find it unlikely that the removal opponent would be offering these goods for an Australian competition if those goods were not concurrently available. In terms of localised use, section 102 of the Act applies if the removal applicant indicates that it is the registered owner of a trade mark which is substantially identical or deceptively similar to the challenged mark. The removal applicant has not provided evidence to this effect. While I find that this advertisement constitutes an actual offer to trade in the goods bearing the mark in Australia for the purposes of section 92(4)(a), it occurred in January 2005, falling outside the relevant non-use period. As such, it cannot assist in the determination of non-use under s92(4)(b). Similarly, the undated office stationery (Exhibits 8-10), and other dated examples of use occurring outside the non-use period (including exhibits 7A, 11, 24, and 25) also cannot establish use of the trade mark within the non-use period.

3. With regard to the opponent’s tax invoices dated within the non-use period, it was further argued that evidence of a single invoice should be accompanied by supporting documents or a statement proving the sale, for use to be established. The relevant cases cited by the removal applicant include the “Thunderbird”[2] case, Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd[3] and Geo W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc.[4] However, it was observed by the Hearing Officer in the latter case that:

   …there seems to be no reason why the opposition could not succeed in the present case if the opponent satisfies me that the sole invoice to the Overseas Distributors was "overwhelmingly convincing proof" contemplated by Wilberforce J in "Nodoz" case, supra.

   [2] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592.

   [3] Prosimmon Golf (Aust) Pty Ltd v Dunlop Australia Ltd (1987) 9 IPR 425.

   [4] Geo W. McPherson Nominees Pty Ltd v Remington Arms Company, Inc [1999] ATMO 101

4. Use of a trade mark is not necessarily determined by the amount of supporting documents produced by the removal opponent, but whether the demonstrated use has been conclusive. While some of the above cases did involve further corroborating evidence, I am not convinced that such evidence is necessary if it is clear that the invoice is conclusive proof of trade mark use. Michael Kar, (the director of the removal opponent) has declared that all of the invoices are “proof of sales of Water Coolers… and related Watermill products in Australia… dating from the year 2008 back to 2004.” (Paragraph 11, 1^st Kar Declaration). Coupled with the balance of the evidence provided by the removal opponent, I find that this statement is sufficient to support the relevant invoices as evidence of bona fide trade mark use. In addition, the quantity of produced invoices convinces me that the use of the trade mark was neither temporary nor spasmodic.  

5. Ms Arcus further submitted that use of “Watermill” on the letterhead of a tax invoice would not be sufficient to constitute use of the trade mark unless “Watermill” was also mentioned within the description of the goods.[5] Considering the opponent’s remaining evidence, I do not believe it is necessary for the trade mark to be mentioned in the subject of the invoice as well as on the printed letterhead. It is clear that the trade mark use on most of the invoices is in response to an order for the relevant goods. To satisfy s92(4)(b), the removal opponent does not have to establish that the goods were received by the consumer, or even that an actual sale has occurred. In Moorgate Tobacco[6] (at 443):

   It is not necessary that there be an actual dealing in goods bearing the trade mark before there can be local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark or that mark has been used in an advertisement of the goods in the course of trade.

   [5] Referring to in Le Cravatte di Pancaldi SRL v Camiceria Pancaldi and B SRL (1999) 45 IPR 533.

   [6] Moorgate Tobacco Co Ltd v Phillip Morris Ltd [No. 2] (1984); 3 IPR 545.

6. One of the invoices relates to the sale of a water purifier from Australia to an American customer. Section 228 contemplates that trade use such as this may amount to use in Australia. Additionally, in Re: Registered Trade Mark “Yanx”[7] it was observed that:

   It would appear there can be use in Australia for the purposes of the Act when a sale or offer for sale occurs in Australia but the goods are located, or the services will be provided, abroad.

   [7] Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199.

7. As a result, I am satisfied that some of the opponent’s tax invoices (including exhibits 15, 16, 18, 19, 21 and 22) establish trade mark use of the words “Watermill” and “Watermill Pure Refreshment” in Australia at the relevant time, on goods including water coolers, water purifiers and parts such as dispenser taps, filters and cup holders.

8. The only evidence submitted by the removal applicant is a statutory declaration by Michael Rumore, highlighting the investigative process in determining whether the opponent was using its trade mark in the non-use period. The investigations were conducted in September 2007 and Mr. Rumore was of the opinion that the above trade marks had not been used by the removal opponent at that time. However, the investigations were only relevant to the use of the trade mark in September 2007, and do not address the entire non-use period. I am satisfied that the removal applicant has taken reasonable steps to determine whether there has been trade mark use prior to commencing this action. As the removal opponent has established use in the non-use period this may simply indicate that the investigations were not able to discover the opponent’s use of its trade mark. Alternatively, the implication may be that the use of the trade mark which has been presented was not genuine or bona fide. However, I can find nothing in the parties’ evidence leading to an inference that the use of the trade marks was not genuine.

Intention to use

1. Under section 92(4)(a), a sworn statement that the application for registration intended to use the trade mark would be sufficient to shift the onus of proving a lack of intention to the removal applicant.[8] While the opponent has not made a sworn statement specifically setting out this intention, I do not think that this is the sole way in which an opponent may shift the onus of proving an intention. The omission is understandable in the case of trade mark 817820, as the ownership of this trade mark was assigned to the opponent from a Mr. Peter Pickering on 1 August 2003. It is unknown whether Mr. Pickering intended to assign the trade mark at the time of filing (see s92 (4)(a)(iii)).

   [8] Structureco Inc v Starite Distributors Pty Ltd (2000) 49 IPR 209 and Bunter v Hobarama LLC (2005) 67 IPR 216 at 222.

2. I find that it is necessary to take into account the entirety of the evidence submitted by the removal opponent when assessing its intention at the time of filing. The removal opponent had an established “Watermill” company in Indonesia, the Australian company name “Watermill International (Australia) Pty Ltd” was registered on 31 July 2003, and it had taken active steps in September 2003 to protect its trade marks from potential infringement in Australia. I believe that these actions indicate “An existing intention to offer or supply such goods in trade…”[9] at the time of filing the application.

   [9] Moorgate Tobacco Ltd v Phillip Morris Ltd (Supra).

3. If there is any doubt regarding the removal opponent’s intention to use trade mark no. 968134, it can be rebutted by any actual use of the trade mark on the goods one month prior to the filing of the removal application.  The majority of the invoices referred to above include the “Watermill Pure Refreshment” trade mark, as does the advertised competition in January 2005. Accordingly, as trade mark use has been established for trade marks 968134 in relation to class 11, the remaining issue is whether there was an intention to use the remaining goods in class 32 at the time of filing.  

4. Neither the use nor intended use of the trade mark extends to the goods claimed in class 32 of trade mark no. 968134. There is no mention of any trade mark use on these particular goods by the removal opponent and no indication that it intended to manufacture those products. As the onus is on the removal opponent and removal application applies to all goods in the specification of trade mark registration no. 968134, I find that the non-use action is successful for the entirety of class 32.

Discretion of the Registrar:

101Determination of opposed application—general

(1)Subject to subsection (3) and to section 102, if:

(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

(b)the Registrar is satisfied that the grounds on which the application was made have been established;

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(2)Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)similar goods or closely related services; or

(b)similar services or closely related goods;

to those to which the application relates.

Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:For registered owner see section 6.

1. Under section 101(1), the registrar has the discretion to remove the trade mark from the register for any or all of the goods to which the application relates and may consider whether that use has occurred on similar goods or closely related services under section 101(4) in exercising the discretion.

2. In the event that trade mark use was established by the removal opponent for certain goods, it has been argued that the trade mark be removed for those specific goods remaining in the specification. However, I find that the trade mark use on goods similar to those contained in the class 11 specifications may also remain by applying the discretion allowed under section 101(4) of the Act. Justice Drummond made the following comments in McHattan v Australian Specialised Vehicle Systems Pty Ltd [10] in relation to section 92:

   …if that provision is construed to permit fine distinctions to be drawn between two items, eg between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz that between armoured military vehicles of greater than 8 tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion.

   [10] (1996) 34 IPR 537 (at 544)

1. As a result, I am satisfied that the removal opponent has discharged the onus of establishing trade mark use for the specification of goods contained in class 11 of the trade mark registrations.

Decision

1. The removal opponent has discharged the onus of establishing bona fide use of both of its trade marks for the specification of goods in class 11. However, the removal applicant has been successful under section 92(4)(a) of the Act for the following specification of goods in trade mark no. 968134:

   
   Class: 32

   Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

2. Accordingly, I direct that all of the goods in class 32 will be removed from the specification of trade mark no. 968134 after a period of one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, the amendment will not be effected until that appeal has been discontinued or dismissed, or the registration will be subject to a decision made by the Federal Court.

Costs

1. The non-use applicant has sought the removal of all goods in both applications to which it has been only partially successful in one application. As a result, I decline to make an award of costs and find that each party should bear their own costs of these proceedings.

Heath Wilson

Hearing Officer

Trade Marks Hearings

4 May 2010